Ex Parte Sato et al

Patent Trial and Appeal Board

Mar 31, 2016

12087973 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/087,973 07/18/2008
21171 7590 04/04/2016
STAAS & HALSEYLLP
SUITE 700
1201 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
RikaSato
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
0970.1023 4252
EXAMINER
MUMMERT, STEPHANIE KANE
ART UNIT PAPER NUMBER
1637
NOTIFICATION DATE DELIVERY MODE
04/04/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RIKA SATO and KOSUKE UEY AMA 1
Appeal2014-001844
Application 12/087,973
Technology Center 1600
Before ERIC B. GRIMES, TINA E. HULSE, and RICHARD J. SMITH,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a claims to a
reaction container. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Background
"The present invention relates to a disposable container suitable
for biological reaction, for example, a disposable reaction container
which can be applied when a sample including a minute amount of
1 According to Appellants, the real parties in interest are TOPPAN
PRINTING CO., LTD. and RIKEN. (Br. 2.)
Appeal2014-001844
Application 12/087,973
DNA is collected from a body, subjected to PCR amplification, and
examined for a single nucleotide polymorphism thereof." (Spec. 1, 11.
5-8.)
Claims on Appeal
Claims 1---6, 11-15, and 20-22 are on appeal. (Claims Appendix, Br.
11-13.) Claim 1 is illustrative and reads as follows:
1. A reaction container comprising:
a base plate; and
a cover sheet,
wherein the base plate has a linear recess on a reverse side surface
thereof and the cover sheet covers the linear recess to configure a tunnel-
shaped reaction chamber surrounded by the cover sheet and the base plate,
and
wherein the cover sheet includes:
an adhesion portion, an adhesion surface of the adhesion
portion being adhered with a part of the base plate; and
a protruding portion which protrudes into the reaction chamber
further inside than a plane extending from the reverse side surface of the
base plate, so that the protruding portion covers an entire opening of the
linear recess.
(Id. at 11.)
Examiner's Rejections
1. Claims 1, 3, 4, and 20-22 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Veprintsev.2 (Final Act. 3.)3
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Veprintsev and Kohara. 4 (Id. at 5.)
2 Veprintsev, WO 02/087763 Al, published Nov. 7, 2002 ("Veprintsev").
3 Office Action dated Aug. 29, 2012.
4 Kohara et al., US 7,666,662 B2, issued Feb. 23, 2010 ("Kohara").
Kohara's filing date (35 U.S.C. § 102(e)) is May 26, 2004.
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3. Claims 5, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Veprintsev and Kohara. (Id. at 6.)
4. Claims 6 and 13-15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Veprintsev and Hong. 5 (Id. at 7.)
Appellants separately argue claims 1, 2, 4, 21, and 22. (Br. 4--10.)
FINDINGS OF FACT
We adopt the findings and analysis of the Examiner set forth below
concerning the scope and content of the prior art.
FF 1. Veprintsev teaches a sample plate assembly having wells for
receiving fluid samples to be analyzed, and a cover having protrusions that
extend into the wells. (Veprintsev, Abstract.)
FF 2. The Examiner finds that Veprintsev teaches a reaction container
comprising a base plate and a cover sheet, "wherein the base plate has a
linear recess on a reverse side surface thereof and the cover sheet covers the
linear recess to configure a tunnel-shaped reaction chamber surrounded by
the cover sheet and the base plate." (Final Act. 3.)
FF 3. The Examiner finds that the cover sheet of Veprintsev includes
an adhesion portion, and an adhesion surface of the adhesion portion being
adhered with a part of the base plate. (Id.)
FF 4. The Examiner finds that the cover sheet of Veprintsev includes
"a protruding portion which protrudes into the reaction chamber, further
inside than a plane extending from the reverse side of the base plate, so that
the protruding portion covers an entire opening of the linear recess." (Id.)
5 Hong et al., Integration of gene amplification and capillary gel
electrophoresis on a polydimethylsiloxane-glass hybrid microchip, 22
Electrophoresis 328-33 (2001) ("Hong").
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Application 12/087,973
ISSUES
Whether a preponderance of evidence of record supports the
Examiner's (1) finding of anticipation under 35 U.S.C. § 102(b), and (2)
conclusion of obviousness under 35 U.S.C. § 103(a).
DISCUSSION
Anticipation under 35 U.S.C. § 102(b)
Principles of Law
A claim is anticipated if a prior art reference discloses every limitation
of the claimed invention, either explicitly or inherently. In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). In considering the disclosure ofa
reference for anticipation, it is proper to take into account not only specific
teachings of the reference but also the inferences that one skilled in the art
would reasonably be expected to draw therefrom. In re Preda, 401 F .2d
825, 826 (CCP A 1968).
Analysis
Claim 1
Appellants refer to the Figures of Veprintsev to argue that the "wells
[20] are not a linear recess" and that "[t]he wells 20 in Veprintsev are not
tunnel-shaped reaction chambers." (Br. 6.) Appellants also argue that the
protrusions in Veprintsev "do not cover an entire opening of the wells." (Id.)
We are not persuaded by Appellants' arguments. The Examiner finds
that the "linear recess" and "tunnel-shaped" limitations are disclosed by
Veprintsev. (FF 2.) In support of those findings, the Examiner points to the
disclosures in Veprintsev of a base plate "incorporating at least one
depression, or well, for containing a sample," and a cover having "at least
one protrusion in correspondence with at least one depression," and that the
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Appeal2014-001844
Application 12/087,973
protrusion may be formed as "an elongate cube with a square cross-section."
(Ans. 3--4, citing Veprintsev, 3, 11. 10-12; 2, 11. 17-18.) The Examiner
reasons that "where the protrusion is a cube with a square cross-section, the
corresponding depression must be cubical or squared off, as well, which
would lead to a linear depression or recess." (Ans. 4.) We agree with the
Examiner's reasoning.
The Examiner also finds that the claim limitation "so that the
protruding portion covers an entire opening of the linear recess" is disclosed
by Veprintsev. (FF 4.) In support of that finding, the Examiner points to the
disclosure in Veprintsev that "[ w ]here such a step-wise variation is provided
in cross-section, the upper part of the protrusion forms a lip which extends
beyond a rim of the well and which may seal the sample contents." (Ans. 4,
citing Veprintsev 2, 11. 22-24.) We agree with the Examiner. In the relevant
embodiment, the protrusion includes a lower portion that protrudes into the
recess and an upper portion that seals the recess; thus, the protrusion as a
whole covers the entire opening of the recess.
Claim 4
Claim 4 recites "[t]he reaction container according to Claim 1 or 2,
wherein the cover sheet is formed integrally with the base plate by heat-
sealing." (Br. 11.) Appellants argue that V eprintsev "does not teach or
suggest the feature of forming a cover sheet integrally with the base plate by
heat-sealing." (Id. at 8-9.)
We are persuaded by Appellants' arguments. The Examiner
references Veprintsev's teaching that "[t]he seal can be enhanced by placing
adhesive or other sealing means, such as a viscous fluid, around the lip."
(Final Act. 4; Veprintsev, 2, 11. 25-26.) However, that teaching does not
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Application 12/087,973
disclose a reaction container "wherein the cover sheet is formed integrally
with the base plate by heat-sealing" as recited in claim 4. Accordingly,
claim 4 is not anticipated by Veprintsev.
Claim 21
Appellants make substantially the same arguments regarding claim 21
as made in connection with claim 1. Accordingly, for the reasons set forth
above, claim 21 is also anticipated by V eprintsev.
Claim 22
Claim 22 recites " [ t] he reaction container according to claim 1,
wherein the protruding portion is formed by pressing and elongating the
cover sheet into the reaction chamber from the reverse side surface of the
base plate." (Br. 13.) Appellants argue that the protrusions of Veprintsev
are premade and "are not formed by pressing and elongating the cover 14
into a reaction chamber." (Id. at 9.) Appellants also argue that "Veprintsev
teaches away from the features of claim 22." (Id. at 10.)
We are not persuaded by Appellants' arguments. Claim 22 is a
product-by-process claim and the claimed product-a reaction container-is
the same regardless of whether the protruding portion is "formed by pressing
and elongating the cover sheet into the reaction chamber." It is well settled
that "[t]he patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process." In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted). Here, even though
Veprintsev does not expressly describe the process recited in claim 22,
Appellants have not pointed to any feature of Veprintsev's that differs from
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a product made by the process of claim 22. Furthermore, Appellants'
teaching away argument is unpersuasive because it is inapplicable to an
anticipation analysis. See ClearValue, Inc. v. Pearl River Polymers, Inc.,
668 F.3d 1340, 1344 (Fed. Cir. 2012).
Conclusion
A preponderance of evidence of record supports the Examiner's
finding that claims 1, 21, and 22 are anticipated by Veprintsev.
Claims 3 and 20 were not argued separately and fall with claim 1.
A preponderance of evidence of record fails to support the Examiner's
finding that claim 4 is anticipated by Veprintsev.
Obviousness under 35U.S.C.§103(a)
Principles of Law
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Analysis
Claim 2
Claim 2 recites "[ t ]he reaction container according to Claim 1,
wherein a height of the protruding portion is 0.1 µm to 10 µm." (Br. 11.)
The Examiner found that "[ w ]hile Veprintsev does not specifically teach
dimensions, an ordinary practitioner would have recognized that the results
optimizable variables of ... dimensions could be adjusted to maximize the
desired results."6 (Final Act. 5.) Appellants argue that "none of the relied
6 We note that, while Kohara was cited by the Examiner, the Examiner does
not discuss the applicability of Kohara to the rejection of claim 2.
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Application 12/087,973
upon art teaches or suggests the features of claim 2." (Br. 8.) Appellants
argue further that
(Id.)
it is submitted that identification of these dimensions is not
simply "routine optimization" but rather the nonobvious work of
the inventors who determined that the claimed dimensions would
produce an arrangement in which the amount of reagents and the
like to be lost by entering any gaps caused by the thermal
expansion co-efficient differences between the base plate and the
cover film are minimized.
We are not persuaded by Appellants' arguments. "[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation." In
re Aller, 220 F.2d 454, 456 (CCPA 1955). Here, Veprintsev discloses the
general condition of a protruding portion with a "height" as claimed. (FF 1,
4; Veprintsev, FIGS. 5-9.) The claimed height range of the protruding
portion is thus the result of routine optimization or experimentation, and
Appellants have offered no persuasive evidence or argument that the
claimed height range is critical or otherwise achieves any unexpected results.
See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citations
omitted).
Accordingly, we find that the Examiner has satisfied the burden of
showing "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). The Examiner has therefore established a prima
facie case of obviousness and Appellants have not overcome that prima facie
case.
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Application 12/087,973
Conclusion ofLaw
A preponderance of evidence of record supports the Examiner's
conclusion that claim 2 is obvious under 35 U.S.C. § 103(a).
Rejections 3 and 4
Appellants present no arguments in response to Rejections 3 and 4.
Accordingly, those rejections are affirmed. See 37 C.F.R. § 41.37(c)(l)(iv);
Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008).
SUMMARY
We affirm the rejections of claims 1-3, 5, 6, 11-15, and 20-22.
We reverse the rejection of claim 4.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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